Toronto, Ontario, October 23, 2006
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
and
THE UNITED STATES SHOE CORPORATION
REASONS FOR ORDER AND ORDER
[1] This is an appeal from a decision of the Opposition Board for the Registrar of Trade-marks dated December 6, 2005 wherein an application to register as a trade-mark the words THE INVINCIBLES filed by the Applicant as number 893,847, was refused. The appeal was brought by way of an Application under Rule 300(d) of this Court. This particular application was made by way of summary judgment which, it appears, a Registry officer had suggested as appropriate. Since the proceeding is unopposed, the Respondent having stated by letter that it does not wish to appear to contest the matter and the Registrar of Trade-marks having filed a similar letter, I permitted the matter to proceed in this fashion.
[2] The trade-mark as applied for was based on proposed use for the words THE INVINCIBLES in association with:
1. impact resistant polycarbonate eyeglass lenses.
2. corrective, protective and/or anti-glare eyewear and lenses; namely, replacement lenses, earstems, frames, nose pieces and foam strips.
3. cases especially adapted for corrective, protective and/or anti-glare eyewear.
[3] The Respondent opposed the application on the basis of its prior registration of the trade-mark INVISIBLES for “opthalmic (sic) lenses”.
[4] The Hearing Officer reviewed the evidence and considered in particular the criteria set out in section 6(5) of the Trade-Marks Act, R.S.C. 1985, c. T-13. He concluded at pages 6 and 7 of his Reasons:
It is apparent from the above discussion of section 6(5) that some factors strongly favour the opponent’s submission that there is reasonable likelihood of confusion between the marks in issue, while other factors strongly support the applicant’s submission that there is no reasonable likelihood of confusion. In weighing all of the factors and their relative importance together, I have arrived at the conclusion that, at all material times, the reasonable likelihood of confusion between the marks in issue balances evenly with no reasonable likelihood of confusion. As I am unable to arrive at a determinative conclusion, and as the onus is on the applicant to show, on a balance of probabilities, that there would be no reasonable likelihood of confusion, I must find against the applicant.
[5] As provided for by section 56 of the Trade-Marks Act supra the Applicant has filed further evidence on this appeal. This evidence demonstrates that there are meaningful differences between the wares, that there is no evidence as to actual confusion between the wares bearing the trade-marks at issue since the Applicant commenced use of its trade-mark and, that there are differences in the channels of trade in which the wares are advertised and sold. The Court is permitted to take a fresh view of matters where meaningful new evidence is submitted on appeal (AstraZeneca AB. Novopharm Ltd., [2002] 2 F.C. 148 (C.A.) at paras. 25 to 33).
[6] The new evidence is meaningful and serves to tip the balance, found to be even by the Opposition Board, in favour of the Applicant.
[7] Accordingly, the appeal will be allowed, the Opposition is rejected, with no costs to any party.
ORDER
For the foregoing Reasons;
THIS COURT ORDERS that
1. The appeal is allowed;
2. The Opposition to trade-mark application number 893,847 is rejected;
3. There are no costs to any party.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-205-06
STYLE OF CAUSE: CITY OPTICAL HOLDINGS INC. v. THE UNITED
STATES SHOE CORPORATION
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: October 23, 2006
REASONS FOR ORDER
AND ORDER: HUGHES J.
DATED: October 23, 2006
APPEARANCES:
|
Mr. Tibor Sarai
|
FOR THE APPLICANT
|
|
|
|
|
No appearance |
FOR THE RESPONDENT
|
|
|
|
|
|
|
SOLICITORS OF RECORD:
|
Feltmate, Delibato, Heagle LLP, Oakville, Ontario
|
FOR THE APPLICANT
|
|
|
|
|
Bereskin & Parr Toronto, Ontario |
FOR THE RESPONDENT
|